Appeal No. 97-3214
Application No. 08/280,369
said sled along a rectilinear path extending in a
direction other than along the material pass line, and
means for moving said sled along said path between said
active and inactive positions,
with the active position having previously been defined as being
“in” the material pass line and the inactive position as being
“out of” the material pass line.
The examiner has rejected this claim as being unpatentable
over Matsunaga in view of Graf and Brand. It is axiomatic that
the test for obviousness is what the combined teachings of the
prior art would have suggested to one of ordinary skill in the
art. See In re Keller, 642 F.2d 413, 425, 208 USPQ 871, 881
(CCPA 1981). In establishing a prima facie case of obviousness
under 35 U.S.C. § 103, it is incumbent upon the examiner to
provide a reason why one of ordinary skill in the art would have
been led to modify a prior art reference or to combine reference
teachings to arrive at the claimed invention. See Ex parte
Clapp, 227 USPQ 972, 973 (BPAI 1985). To this end, the requisite
motivation must stem from some teaching, suggestion or inference
in the prior art as a whole or from the knowledge generally
available to one of ordinary skill in the art and not from the
appellant's disclosure. See, for example, Uniroyal, Inc. v.
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